Ex parte WHITMAN (2003-1404) Paper 23
Application No. 09/532,230 Page 3
Analysis
[11] In neither the final rejection (Paper 11) or in the examiner's answer (Paper 13) does the examiner
account for the limitations of claims 18-21.
The examiner bears the initial burden of presenting the case for anticipation. Only once
this initial burden is met, does the burden of going forward shift to the applicant. In re King,
801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986). A failure to account for any
limitations in claim 18 and its dependent claims 19-21 is sufficient reason to reverse the rejection
of those claims.
An anticipation analysis begins with a construction of the contested limitations. Toro Co.
v. Deere & Co., _ F.3d _, _ USPQ2d _, 2004 WL 78020 at * 5 (Fed. Cir. 2004). Next comes a
determination of whether the reference discloses each limitation of the claim expressly or
inherently. Akamai Techs, Inc. v. Cable & Wireless Internet Svs., 344 F.3d 1186, 1192,
68 USPQ2d 1186, 1190 (Fed. Cir. 2003).
[12] According to Whitman (Supplemental brief, Paper 12), Bowman does not disclose the selection
and storage of "search phrases".
In proceedings before the Office, claims in an application are given their broadest
reasonable interpretation consistent with the specification, as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
A contested limitation is given its ordinary meaning unless it is clear from the specification that
the applicant In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Any
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Last modified: November 3, 2007